This
case arises from a claim of copyright and trademark
infringement, false advertising, trademark dilution and
violations of the Utah Deceptive and Unfair Trade Practices
Act. There are two motions before the court: Plaintiff's
Motion for Partial Dismissal of Counterclaims filed on
November 30, 2017 and Defendants' Motion for Summary
Judgment filed on January 2, 2018. Plaintiff is claiming that
the second, third, fifth, and sixth counterclaims fail and
should be dismissed. Defendants' summary judgment motion
seeks dismissal of Plaintiff's complaint stating they are
not in violation of any of Plaintiff's trademarks or
protected copyrights.

BACKGROUND

Utah
has an extensive rock-salt formation in Sanpete and Sevier
Counties. The open-cut salt mines near Redmond, Utah have
produced rock salt on a commercial basis for many years.
Plaintiff Redmond Inc. (“Redmond”) and its
predecessors in interest have been in the salt and mineral
business for fifty years. Redmond owns the registered
trademark “REDMOND” on the Principal Register of
the U.S. Patent and Trademark Office for various salt-based
agricultural feed products, nutritional supplements for
animals and table salt. Defendant Willow Creek (“Willow
Creek”) is a corporation organized and existing under
the laws of the State of Utah, and states its principal place
of business is in Redmond, Utah. Defendants developed a
website, business cards, and advertisements containing
information which included a logo for Willow Creek Salt Co.,
which had “REDMOND, UT” in red lettering beneath
it. After Redmond complained of the similarity to their
alleged Trademark, Willow Creek changed the coloring of the
lettering to tan. Willow Creek states they are only
demonstrating the geographic location and origin of their
business and products. Redmond objects to Willow Creek's
use of “Redmond” in any capacity under their
logos and on their website.

MOTION
FOR PARTIAL DISMISSAL OF CLAIMS

Redmond
filed a motion for an order dismissing the second, third,
fifth and sixth counterclaims filed by Willow Creek against
Redmond pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure. Willow Creek has voluntarily withdrawn
its sixth counterclaim. Redmond claims that Willow Creek has
failed to set forth actionable facts to support each claim.

A
pleading must contain “a short and plain statement of
the claim showing that the pleader is entitled to
relief.” Fed.R.Civ.P. 8(a)(2). “To survive a
motion to dismiss, a complaint must contain sufficient
factual matter, accepted as true, ‘to state a claim to
relief that is plausible on its face.'”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)(quoting
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007)). The plausibility standard requires “more than
a sheer possibility that a defendant has acted unlawfully.
Where a complaint pleads facts that are ‘merely
consistent with' a defendant's liability, it
‘stops short of the line between possibility and
plausibility of entitlement to relief.'”
Id. (Quoting Twombly, 550 U.S. at 557).

Willow
Creek alleges in its second counterclaim that Redmond has
engaged in “naked licensing” practices and thus
abandoned any valid trademark. This court finds that Willow
Creek has plead sufficient facts to overcome a motion to
dismiss and that genuine questions of fact exist as to this
claim.

In
counterclaim three, Willow Creek alleges that Redmond has
engaged in unfair competition and false advertising under the
Lanham Act § 43(a). This court finds that there are
sufficient facts alleged to overcome a motion to dismiss but
that there are additional facts alleged in their response.
The court therefore grants Willow Creek leave to amend its
counterclaim to include additional facts that are alleged.

Willow
Creek's fifth counterclaim is for declaratory judgment of
invalidity and unenforceability of copyrights. This court
finds that there are not sufficient facts alleged to show any
invalidity or unenforceability of copyrights and therefore
also grants Willow Creek leave to amend its fifth
counterclaim or voluntarily withdraw it.

MOTION
FOR SUMMARY JUDGMENT

Defendants
have filed a motion for summary judgment seeking dismissal of
Plaintiff's Complaint arguing that their use of
“Redmond” and all associated references thereto
is a protected geographic exception to any alleged Trademark
violation and that their business and advertising materials
do not infringe on any protected copyright. Summary judgment
is appropriate “if the pleadings, depositions, answers
to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to
any material fact and that the moving party is entitled to a
judgment as a matter of law.” Fed.R.Civ.P. 56(c). Given
the state of the case and that discovery has yet to be
conducted, the summary judgment motion is denied as premature
to allow discovery with leave for the parties to file
additional motions as deemed appropriate at a later time.

CONCLUSION

&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;For the
foregoing reasons, Plaintiffs Motion for Partial Dismissal of
Counterclaims is denied and the
court grants Defendants 30 days to amend its third and fifth
counterclaims as stated above and Defendants' ...

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